Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 518

RESPONSE to re #372 to Apple's Supplemental Statement (Public Redacted Version) by Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: #1 Arnold Declaration, #2 Exhibit A, #3 Exhibit B)(Johnson, Kevin) (Filed on 12/20/2011) Modified text on 12/21/2011 (dhm, COURT STAFF).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Cal. Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

 APPLE INC., a California corporation,
Plaintiff,




vs.

 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

Defendants.


CASE NO. 11-cv-01846-LHK
SAMSUNG’S RESPONSE TO APPLE’S
SUPPLEMENTAL STATEMENT
CONCERNING SAMSUNG’S MOTION
TO COMPEL
Date: November 1, 2011
Time: 3:00 pm
Place: Courtroom 5, 4th Floor
Magistrate Judge Paul S. Grewal
PUBLIC REDACTED VERSION




02198.51845/4436107.3

Case No. 11-cv-01846-LHK
SAMSUNG’S RESPONSE TO APPLE’S SUPPLEMENTAL STATEMENT

1

Samsung respectfully submits this response to Apple’s Supplemental Statement

2 Concerning Samsung’s Motion to Compel (Dkt No. 372), which Apple filed earlier today.
3
4
5
6
7
8
9
10
11
Regarding Samsung’s motion to compel Apple to produce specific photographs and a

12

13 model, the parties also attempted to resolve the motion in light of further representations by Apple.
14 An agreement was not reached, unfortunately, and Apple instead filed a supplemental statement
15 this morning in an effort to moot the motion on its own.

Samsung appreciates that Apple has

16 made efforts to resolve Samsung’s discovery requests, but respectfully disagrees that its motion to
17 compel is now moot.
18

First, Apple’s supplement essentially repeats arguments that are insufficient to resolve

19 Samsung’s motion for the reasons Samsung has already stated in the briefing and hearing
20 argument on the motion.

It does not give finality to Samsung’s request that Apple search for and

21 produce original or the clearest available copies of the actual photographs submitted to the PTO
22 during prosecution of the D504,899 patent. Samsung expects that, consistent with its general
23 representations, Apple has searched certain files and locations as indicated in Apple’s
24 supplemental statement. To date, however, Apple has not provided any transparency into the
25
26

1

27
28
02198.51845/4436107.3

Case No. 11-cv-01846-LHK
-1SAMSUNG’S RESPONSE TO APPLE’S SUPPLEMENTAL STATEMENT

1 searches that have been performed thus far.

For example, even in its supplemental submission,

2 Apple has not identified which specific custodians’ files were searched, any of the search terms
3 used, the time frame included in those searches, or any other specific information.

Unless and

4 until Apple provides this type of information so that the Court and Samsung can be confident that
5 Apple has made a diligent, good faith effort to search the relevant persons and entities that may
6 have controlled the photographs at any time, including any potential leads those person or entities
7 might now have as to the whereabouts of the original photographs, Samsung’s motion to compel
8 the photographs cannot be considered moot.
9

Requiring Apple to provide this information is both reasonable and consistent with the

10 Court’s prior ruling on Apple’s motion to compel discovery from Samsung.

Here, Samsung

11 seeks only a specific and small set of already-identified documents known to have been in the
12 possession of Apple’s patent prosecutors at least as recently as 2004.

Samsung is not asking

13 Apple to search for a broad category of documents that may not even have existed.

In light of

14 this and Apple’s apparent reservations about verifying the specifics of its searches, a Court order is
15 necessary to ensure that Apple’s search has been thorough and compliant with its legal
16 obligations. This is important because Apple’s witnesses have consistently indicated that the
17 poor quality of the photographs produced thus far prevents them from testifying about design
18 details that were very likely visible to the PTO when it decided to issue the ’D889 patent.
19

As Samsung previously noted, it may well be the case that originals or clear copies of these

20 photographs no longer exist.

If this is true, Samsung is entitled to finality on the issue.

21 Unfortunately, Apple has only been willing to provide general, conclusory representations about
22 its search efforts to date.
23

These are insufficient.

Second, Apple’s supplemental statement does not moot Samsung’s motion regarding the

24 physical model depicted in the photographs submitted to the PTO.

Apple relies on the testimony

25 of Mr. Stringer to say that the exact model in the photographs submitted to the PTO has been
26 identified.

But he did not in fact so testify.

27
28
02198.51845/4436107.3

Case No. 11-cv-01846-LHK
-2SAMSUNG’S RESPONSE TO APPLE’S SUPPLEMENTAL STATEMENT

1

(See Arnold

2 Decl., Ex. B, November 4, 2011 Deposition of Christopher Stringer, Tr. 98:15-19
3
4
5
6

Apple thus still has not fully linked the physical model to the images

7 in the certified file history, as Samsung has requested in its motion to compel.

(See Samsung’s

8 Motion to Compel at 10, submitted under seal on Oct. 28, 2011
9
10

see also id. at iii, 9

11
12

For at least these reasons, Samsung believes Apple’s supplemental statement has not

13 mooted Samsung’s motion to compel Apple to search for and produce original copies of the
14 photographs submitted to the PTO, or to verify the identity of the model depicted in the ’D889
15 patent file history.

Samsung requests that its motion to compel be granted.

16
17 November 7, 2011

Respectfully submitted,

18

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

19
20
21
22
23
24
25
26

By Kevin P.B. Johnson
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

27
28
02198.51845/4436107.3

Case No. 11-cv-01846-LHK
-3SAMSUNG’S RESPONSE TO APPLE’S SUPPLEMENTAL STATEMENT